Ye Rin Yoo | Trade Marks Attorney
Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565 (‘Fry Consulting’).

3 DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194 (‘DC Comics’).

2 BCom(Finance) LLB GradDipLegalPrac
yerin.yoo@pof.com.au Inspire March 2022
> Horizons registered at least 59
redactions to be unnecessary and
It manufactures and supplies water-
domain names using KANGEN, the
ionisation systems for the production inferred an attempt to conceal the
business names ‘KANGEN’ and
of alkaline water branded as ‘Kangen’ fact that the same invoices were
‘KANGEN AUSTRALIA’ and the
repeated three times and that the
water. Horizons is based in Australia
smart number 1300 526436 that
goods were not delivered in Australia.

and supplies bottled water products.

expressed as 1300 KANGEN, none
Enagic opposed Horizons’ application
of which were used for business
to register KANGEN on grounds
or other ordinary purposes.

under ss 42(b), 43, 44, 58, 59, 60
In reaching a conclusion on bad faith,
and 62A of the Act, of which all
Charlesworth J commented that
except the ss 43 and 59 grounds
...none of the individual
none of the individual matters relied
were pressed. The Registrar
upon by Enagic would in isolation
dismissed Enagic’s opposition on all
matters relied upon
have proven bad faith. However,
grounds. Notably, the s 62A ground
by Enagic would in
the s 62A ground requires the
was dismissed on the basis of
isolation have proven
evidence to be regarded as a whole
insufficient evidence of Horizons’ bad
bad faith. However, the
and, on that basis, Horizons filed its
faith, as well as the fact that Horizons
s 62A ground requires
application in bad faith as its overall
was already the owner of a separate
the evidence to be
conduct fell short of acceptable
registration 1280502 for KANGEN.

commercial behaviour. In particular:
regarded as
Enagic appealed to the Federal
“…the mark was applied for with a
Court where Charlesworth J
a whole...

consciousness of Enagic’s trading
allowed its appeal in so far as it
activities and the intention of
related to grounds under ss 44, 58
preventing its use by Enagic in
and 62A of the Act. Of particular
respect of services in which Enagic
note are his Honour’s comments
was perceived to be engaged
on the s 62A ground relating to
The witness was also found to
and not for the purpose of using
bad faith. The test to be applied
be unreliable. His Honour was
it as a trade mark in respect of
in determining bad faith was that
not satisfied that the witness had
a bona fide course of trade…”
established in Fry Consulting 2
personal knowledge of the relevant
and adopted in DC Comics 3 . An
Finally, his Honour also dismissed
financial matters which would enable
application will be filed in ‘bad faith’
the probative value of Enagic’s
them to give evidence regarding the
if “…reasonable and experienced
evidence as to the “vacant and
invoices. During cross-examination,
persons in the field would view
derelict” appearance of Horizons’
the witness was questioned on
such conduct as falling short of
current premises, and the non-
the selection of invoices and while
acceptable commercial behaviour”.

fulfillment of a trap purchase
it was initially suggested that they
made by on Horizons’ website.

After citing Fry Consulting and DC
were “randomly selected” and were a
Comics Charlesworth J focused on
“representative sample”, this was later The decision provides important
Horizons’ subjective intention when
guidance on the determination of
contradicted by the claim that “we
filing its application. Horizons relied
the ground of bad faith. In focussing
pull[ed] out what was consider[ed]
on a witness who gave evidence
on the subjective intention of the
a sample collection of what I was
that: “…I was instructed personally to
applicant, his Honour’s applied
looking for”. In assessing Horizons’
apply for registration of [the Opposed
intense scrutiny to the evidence and
subjective intention, Charlesworth J
Mark] which I did on 24 September
also took into account of the fact that: other factual circumstances to infer
2016, in conjunction with Horizons’
that intention. This case also provides
> The witness drafted Horizons’
plans to expand the KANGEN
a warning about the potential
class 35 services as an almost
distribution services in Australia in
implications of redacting evidence
exact copy of Enagic’s registration
the context of exports…”, however
and witnesses giving evidence of
1615861 ENAGIC as “she was
this was not accepted as being
matters not within their personal
not a lawyer” and because they
determinative of Horizons’ intention.

knowledge. Copying of specifications
“seemed to fit the bill”.

of goods and services from existing
Charlesworth J found the above
> Horizons’ application contained
registrations or applications may also
witness’ statement to be a mere
an endorsement that the mark
give rise to an adverse inference.

assertion that was not supported by
KANGEN is a ‘coined word’
documentary evidence, particularly
and that its English translation
in relation to any current or potential
is ‘healthy’, which was later
export business. The documentary
disproved by a certified translator.

evidence as filed, seven invoices,
> Horizons previously applied to
did not relate to an export business
register ENAGIC on the same
and was also deemed false or
day as KANGEN, offered for sale
misleading. Horizons had redacted
bottled water products bearing
information including the invoice
both ENAGIC and KANGEN, and
numbers and ‘ship to’ addresses
had a pattern of filing applications
in the evidence as filed. After the
shortly after Enagic filed
unredacted invoices were produced
applications. on discovery, his Honour found the
7